Try a fly swatter instead of an atom bomb: Blackberry Aftermath Part 2

Since the 2006 Blackberry settlement[1] many states have passed laws known to some commentators as ‘anti-patent statutes.’[2] These anti-patent statutes impose liability upon patent owning companies for sending bad faith patent infringement assertion letters, and thereafter pressuring other businesses to settle meritless lawsuits. Unfortunately, these statutes raise substantial questions about whether their enforcement is pre-empted by federal patent law. Moreover, review of these statutes leads to the conclusion that they (i) are uniformly overbroad and thereby (ii) severely burden all patent owning companies whenever they legitimately attempt to exercise their federal statutory right to exclude infringers.[3]

For example, under the Vermont anti-patent statute[4]  in mitigation of liability a court may consider whether a patent owning company which sent a patent infringement assertion letter “practices” that patent.[5]  Under this Vermont statute and other state statutes with a similar provision, a court may place substantial weight upon patent non-use and thereby prevent a bona fide assertion of patent infringement. Another common statutory factory in mitigation includes whether the patent owning company has negotiated with the alleged infringer, although such negotiation may disrupt the patent owner’s litigation strategy.[6]  Still another provision provides that in addition to private citizens and businesses, the state attorney general may commence a lawsuit alleging improper distribution of bad faith patent infringement assertion letters.  Yet another common provision mandate posting a bond by the patent owner if that owner’s patent infringement assertion letter initially appears objectively baseless to a court.[7] These provisions place all legitimate patent owners at a significant economic disadvantage, because these laws are overbroad and do not exclusively focus upon the shady companies to which these statutes were ostensibly directed.

Neither the United States patent statute nor the U. S. Constitution require that a person ‘practice’ their patents to qualify for the right to exclude infringers. Unfortunately, there are bad actors in any industry including some patent owning companies. One solution for eliminating these overreaching patent owning companies comprises more effective enforcement of federal consumer protection laws through federal agencies.  In addition, state laws for unfair competition and consumer protection should resolve bad faith patent infringement assertions and thereby avoid over breath of anti-patent statutes.[8] In this manner patent owning companies would confront less financial hardship and eliminate an additional obstacle to enforcing their rights: In fact, the Vermont attorney general has already relied upon a state consumer protection statute for this purpose.

2021 (c) Adrienne B. Naumann. Ms. Naumann does not sponsor or endorse the advertisements at

[1] See NTP, Inc. v. Research in Motion, Inc., 418 F.3d 1282 (Fed. Cir. 2005).

[2] See Hrdy, Camilla A. “The Re-emergence of state anti-patent law,” University of Colorado Law Review vol. 89: 102(2017).

[3] See 35 U.S.C. 154(a)(1).

[4] Vermont Statutes section 4195 et seq.

[5] Id. at section 4197(c)(4). Other state implemented anti-patent statutes with similar provisions include: General Laws of Rhode Island sections 6-41.1 through 6.41.1-6; and Official Code of Georgia Annotated 10-1-771(c).

[6] Official Code of Georgia section 10-1-771(c); and Utah Code Annotated sections 78B-61903, -1904 and -1905.

[7] Michigan Compiled Laws section 446.169.

[8] See MPHJ Technology Investments, LLC v. Vermont, 803 F.3d 635(Fed. Cir. 2015), cert denied 136 S. Ct. 1658 and 136 S. Ct. 1660 (2016).  MPHJ was remanded from federal court and apparently resolved in state court under the Vermont Consumer Protection Act. See id.


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